Can someone trademark and take my exiting domain name away?

Greetings,

I have a domain name with an online business (mybusiness.com). I fear that some of my competitors could trademark (mybusiness or mybusiness.com) and force me to shut down the site and go out of business.

First of all, can something like this happen? Can someone explain what needs to be done to protect this name and how much it will cost?

Thanks

 

Trademark can't be used after the fact to take away your existing domain. A common law trademark is valid for the first person to use a mark in commerce - in the class they are using it.

You can always start putting a â„¢ next to the name of your domain within your site as well, which is claiming a trademark on the name yourself and giving others notice of your claim. In addition, you could always contest their trademark application for a name that infringed on your mark.

 

Thanks for the response. So all I need to do is add a ™ in my footer like this: (Copyright © 2011, MyBusiness™)?

Do I also need to do something like this by adding a ".com": (Copyright © 2011, MyBusiness.com™)?

Will I be notified when someone is trying to register my domain and business name through a trademark application?

Thanks

 

It is hard to offer specific advice without knowing the name, the business, etc. If the name is protectable at all, then just by using it first you would have a common law trademark. It provides some additional notice to others to also claim it by using the ™. I would use a ™ following all instances of the name, not just in the footer. This page shows how Mattel, the toy company, is using a combination of exiting ® for already registered marks and ™ for ones that are not yet approved but for which they are staking a claim.

http://shop.mattel.com/family/index.jsp?categoryId=3771358
They put that in each and every instance that name appears on the page. That would be the best way to alert the world you are claiming a â„¢ in a particular word or phrase.

 

One reason I am worried is I did a search and found someone else with the same business name, but it is filed as: "Domestic Limited Liability Company (LLC)" or "MyBusiness, LLC".

Also, the name of my business does not exist in the dictionary, it's a unique sort of name not found anywhere else except this one business. They filed as a Domestic Limited Liability Company (LLC) in 2005, years before I bought the domain name in 2011. My name is not yet a registered trademark, so can they come back and take the domain away from me? Also, I believe they may be brick-and-mortar only and my business is purely online.

 

If you guys are not using it in the same type of business then you both probably have a common law right to use the mark in your respective industries. Using a mark in one industry does not preclude others from using the name on other industries. It is likelyhood of confusion that matters. (have you checked if they registered a trademark?)

There was a story in the paper the other day about a oil production company using the name pixar and question whether Disney could even do anything about it since it is a totally different industry and unlikely to cause anyone to think it is Disney related. On the other hand if this company is in a specific industry and known by that name, and some years later you pick the same name for your domain and are in the same industry there is a good chance they could get the name from you if they thought you were confusing the marketplace and wanted to spend money to prove it.
http://www.theglobeandmail.com/repo...ame-pixar-do-you-think-of-oil/article2255794/

(You can PM me the name if you want and I can take a closer look.)

 

How can I prove that I was the first to claim the unregistered trademark and that I placed "â„¢" on my website and business name first? Can I just take screenshots of the website, the "â„¢" and my computer's clock and date and save those images? Someone could come along in the future, make up a story and say they added the "â„¢" long before me.

Thanks

 

By using it first.

It is first use in commerce that matters, not first to just use the name. Owning a domain alone for example would not give one rights to the name. You have to use it.

As far as proof, it can be lots of things, this is where http://www.archive.org/web/web.php (The Waybackmachine) comes in handy. I would not imagine that anyone just making up a story would (1) spend the money needed for trademark litigation, and (2) would try something with flimsy made up evidence.

 

Go spend the $400 and get your domain trademarked just to be sure. Then you won't have to worry no more!

And yes, this does happen.

 

need advice on trademark issue.
Father originally started business, son joined him and together they decided on a logo. The logo was used on vehicles, marketing materials, etc. Eventually the father started another branch of the company in another state with the same logo, then after a few years the son bought out the father in the original company and re-incorporated with a new/but similar name and continued using the logo, then he filed for the trademark so that the father could no longer use it. what steps should the father take in continuing to have legal right to use the logo?

Thank you

 

Well since the son has already filed for the logo's trademark (and if it's already approved), the father has no choice but to try to bring the case to court.

 

As long as you are the legal owner of this domain no one can take it from you in any way. If you still have doubt you should talk to some legal advisor of IT field.

 

It's still in process. He filed in March, I think there is a period in which one can fight it?

 

As long as you have registered the domain name before they trademark it, then you wont have a problem.